WHO OWNS THE COPYRIGHT IN YOUR WEB SITE?

IVAN HOFFMAN, B.A., J.D.

So you're a writer, a publisher, an artist or
the like with a deep ache to express yourself. You've gone to the trouble
and expense of searching out and then paying a professional website designer
to put together your piece of the electronic universe. Now you can tell
everyone whatever it is you want to tell everyone. The question is: who
owns what everyone is going to see? Does this piece of your heart actually
belong to you?

In the absence of a valid written contract
resolving the open issues, it is actually not quite as simple a situation
as you might expect. But what is simple in the law business?

These are some of the open issues:

1. We must first distinguish between the copyright
in the design, the "look" of the site and the copyright in the content.
Colors, gifs, jpegs, setup, hyperlinks, and other elements contributing
to that design start out being owned by the creator, in this case the website
designer. But even that is not set in stone as it were. For you undoubtedly
played a hand in making the underlying creative decisions and so perhaps
the copyright is owned jointly.

This is what the United States copyright statute
defines as a joint work:

A ''joint work'' is a work prepared
by two or more authors with the intention that their contributions be merged
into inseparable or interdependent parts of a unitary whole.

But as you may see, if the respective contributions
to the end product website are distinguishable, there may be separate copyright
owners of those separate elements. Not only that, but your contribution
must be more than minimal in order that you qualify as a joint author.
There are many consequences of joint authorship which are beyond the scope
of this article.

2. Moreover, to the extent that the gifs, jpegs
and other elements were downloaded from the Net, assuming even that they
themselves are free of copyright restrictions which is not always the case,
neither the designer nor you can claim a copyright in that which is already
in the public domain. On the other hand, to the extent that these graphics
were created by the website designer, it appears again that that designer
initially owns the copyright therein. But if they are your creation, your
logo, your photo or that of your dog, then presumptively you own the rights
thereto. (Unless of course the photos were taken by someone else, in which
event the photographer owns the copyrights therein and you must obtain
permission to use them on your site.) I told you this was not simple.

3. Let's move on to the other substance of
the site: the text. Obviously, if that has been created by you, you own
the copyright therein. But it is not simply text that appears on the Net,
it is also the way that that text is set up, in the form of HTML or even
VRML coding. If the designer created that coding, then the coding, as distinguished
from the text itself, may be owned by the designer. Included in the foregoing
concept of copyright in the coding is the manner in which the designer
has created the hyperlinking within the site. And so you may own the text
but the designer may own the way the text is set up on the site. (Keep
in mind that it is not all that clear that coding can be copyrighted. It
may not be protected by the copyright laws but may, under certain circumstances,
be protected by patent laws.)

There may be many other elements of copyrightable
material on the site. The question of copyright ownership as to each of
those elements turns on who created them and under what circumstances.

Having outlined some, but certainly not all
of the issues, there are two potential kinds of agreements that may be
used to resolve those issues: a work made for hire agreement and a copyright
assignment.

1. If the designer is a valid employee of your
company, then everything that that designer creates during the course and
scope of his or her employment belongs to you. You own the copyright.

2. On the other hand, if you have hired an
independent contractor to design the site, then there must be a valid,
written agreement, signed by the parties. But note that it must be both
valid and written. In this regard, to be a valid work made for hire agreement
you must have "specially ordered or commissioned" the work (presumably
you did) and the written agreement must state that it is a work made for
hire agreement. There is also a significant question as to when this agreement
must be executed-either before the work actually is commenced or afterwards.
(See "Playboy and the Work Made For Hire Agreement")
You cannot acquire rights to the site by an after-the-fact attempt at a
work made for hire agreement. There is no such thing.

The web site design work also must belong to
one of the statutory categories in order to qualify as a work made for
hire. I am assuming for the sake of this article that hiring the designer
is a "contribution to a collective work," one of the statutory categories
of permissible work made for hire agreements. In this regard, it may be
a collective work, I am assuming, because you have created certain of the
elements, the text for example, and the designer is contributing the design
elements. It also may, under certain circumstances, be an audio visual
work or a compilation. There may be other circumstances in which the work
does not fall into any of these categories nor any other of the statutory
categories of permissible work made for hire agreements, in which event
you cannot rely on the work made for hire contract and you must turn to
the copyright assignment to transfer the rights.

And so let's assume that there is no writing
between the parties that satisfies the work made for hire requirements.
You may perhaps acquire all the rights of the designer in the site by having
the designer execute a written assignment of copyright that transfers all
those rights from the designer to you. Note however, that to the extent
the designer did not create the material (as in the form of the gifs etc.
above), you do not acquire any rights therein.

You would want to acquire all rights in the
site, not merely the rights to use it as your site. As a result, if you
have no written, valid agreement conveying to you all these rights, you
may then end up with at best merely a license to use your own site. This
is not particularly satisfying since you may be losing valuable rights.
This is after all, you, your expression of you. You should be free to use
your expression of your heart freely. You must remain constantly aware
that this area of electronic issues is constantly evolving and what appears
to be a web site today can be a video game or a feature length motion picture
tomorrow. (See "Electronic Rights")

Please note however that this is not unfair
to the designer since the designer can build into his or her fee what he
or she feels is appropriate for a total "buy out." Thus both sides can
win.

There may be other issues involved beyond the
basic copyright ones. These may be whether the designer can put his or
her logo on the site or whether the designer can use a copy of the site
as part of his or her portfolio. These are more contract questions than
copyright questions, although they may flow from the answers to the copyright
questions.

So you can see that there are no simple answers
in this new area. And it is the wisest advice to enter into a written agreement
dealing with these as well as other issues that may arise.

And if you need help preparing or negotiating
such an agreement, just click on the email to me!

This article is not intended as a substitute
for legal advice. The specific facts that apply to your matter may make
the outcome different than would be anticipated by you. You should consult
with an attorney familiar with the issues and the laws.

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